On Remand, Federal Circuit Rejects Wi-Fi One’s Time-Bar Arguments

The Federal Circuit holds that the Board did not err in deciding several issues relating to whether a party was time-barred from petitioning for IPR under 35 U.S.C. § 315(b).

As discussed in an earlier post, the Federal Circuit in Wi-Fi One, LLC v. Broadcom Corp., Nos. 2015-1944, 2015-1945, 2015-1946, (Fed. Cir. Jan. 8, 2018) held en banc that the Board’s determination as to whether an IPR petition is time-barred is reviewable on appeal. Now, upon remand to the original merits panel, the Federal Circuit has affirmed the Board’s decision that the patent owner Wi-Fi One failed to establish that the petitioner Broadcom was in privity with defendants from an earlier litigation and was therefore time-barred from filing an IPR petition.

Procedural History

In 2013, Broadcom petitioned for IPR of three patents owned by Wi-Fi One. When responding to the petitions, Wi-Fi One argued that the petitions were untimely under 35 U.S.C. § 315(b) because Broadcom was in privity with defendants that were served with a complaint alleging infringement of the patents more that one year before the IPR petitions were filed. Wi-Fi One also filed a motion seeking additional discovery pertaining to its allegations of Broadcom’s relationships with the defendants.

The Board denied Wi-Fi One’s motion for additional discovery. Upon denial of the motion, Wi-Fi One petitioned the Federal Circuit for a writ of mandamus to compel the requested discovery. The Federal Circuit denied the petition for the writ of mandamus.

The Board eventually issued three Final Written Decisions holding the challenged patent claims unpatentable. The Final Written Decisions also addressed Wi-Fi One’s time-bar arguments and found that Wi-Fi One had not shown that the petitions were untimely under 35 U.S.C. § 315(b).

Wi-Fi One appealed the Final Written Decisions to the Federal Circuit. With respect to the § 315(b) issues, the merits panel held that the decision as to whether Broadcom’s petition was time-barred was not appealable.

The Federal Circuit granted rehearing en banc to address the § 315(b) issues. The court expressly overruled Achates and held that time-bar determinations under § 315(b) are not exempt from judicial review. Accordingly, the case was remanded back to the original merits panel to decide the time-bar issues.

In considering Wi-Fi One’s argument that Broadcom was time-barred from filing the petition, the court began its analysis by examining the language of § 315(b). Because the statute used the common law terms “privy” and “real party in interest,” the court concluded that Congress had intended to adopt common law principles regarding the meanings of these terms.

The court then discussed the guidance regarding § 315(b) provided by the PTO’s Office Trial Practice Guide. While holding short of explicitly endorsing the guidance provided by the Trial Practice Guide, the court did find the guidance “consistent” with general legal principles. In this discussion, however, the court noted that Wi-Fi One had not taken issue with the Trial Practice Guide.

The court then turned to Wi-Fi’s argument that the Board applied the wrong legal standard when determining that previous district court defendants were not a privy or a real party in interest. Specifically, Wi-Fi One argued that the Board adopted a strict rule that required Broadcom to have had the right to control the previous district court litigation in order to find those defendants a real party in interest. Wi-Fi One argued that this rule meant the Board viewed the district court defendants’ right to control the IPR of no significance.

The court found Wi-Fi One’s arguments to be a mischaracterization of the Board’s decision. According to the court, the Board’s focus on the issue of whether Broadcom had the right to control the district court litigation was in response to the specific arguments that Wi-Fi One raised in the proceeding. The court found that the Board made it clear that it understood that privity and real-party-in-interest status could be established by Broadcom’s control of the prior litigation as well as the prior defendants’ control of the IPR. Accordingly, in view of the particular arguments Wi-Fi One made to the Board, the court concluded that the Board did not apply a wrong legal standard.

Wi-Fi One also argued that the Board erred by improperly denying its requests for additional discovery under 37 C.F.R. § 42.51(b)(2). Wi-Fi One had requested additional discovery for communications and agreements between Broadcom and the previous defendants relating to cooperation between Broadcom and those defendants. As support for its requests for additional discovery, Wi-Fi One pointed to indemnity agreements that existed between Broadcom and two of the previous defendants. The Board had denied the requests for additional discovery for failing to show that the discovery would produce favorable evidence.

In analyzing the decision on the requests for additional information, the court found that the Board had performed a “detailed analysis” of the privity issue as it applied to § 315(b). And, because the court had already found that the Board did not apply an erroneous legal standard for determining privity and real-party-in-interest, the court found that the Board did not abuse its discretion when denying Wi-Fi One’s requests for additional discovery.

The court then turned to Wi-Fi One’s arguments that the Board failed to provide a sufficient explanation for its ruling on the time-bar issues and that the decision was not supported by substantial evidence. According to the court, the Board had thoroughly addressed the time-bar issues in its decisions on Wi-Fi One’s motion for additional discovery and Wi-Fi One’s subsequent request for rehearing on that motion. The court also found that there was substantial evidence to support the Board’s conclusion that Wi-Fi One had not established that Broadcom was in privity with the previous defendants or that any of those defendants was a real-party-in-interest in the IPR. According to the court, there was no evidentiary support for Wi-Fi One’s “conjecture” that Broadcom was acting on behalf of other parties in the IPR or that Broadcom had control of the earlier litigation. Accordingly, the court concluded that the Board’s decision was supported by substantial evidence.

The Dissent

Judge Reyna filed a lengthy dissenting opinion criticizing the majority’s decision for applying a “narrow standard” for § 315(b). In short, Judge Reyna reasoned that Board had erred by not applying all applicable factors of Taylor v. Sturgell, 553 U.S. 880, 893 (2008). Accordingly, Judge Reyna concluded that the Board applied an erroneous standard for establishing privity and that the Board’s denied of additional discovery was an abuse of discretion. The majority opinion responds to the dissent by noting that the Board properly focused on the only Taylor factors that Wi-Fi One raised in its arguments to the Board.

The PTAB terminated two instituted IPRs because the petitioner became estopped from challenging the claims…

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About the Author

Robert Gravois is a partner at Thomas | Horstemeyer LLP with extensive experience in patent office proceedings, including inter partes review (IPR), covered business method (CBM), reexamination, and interference proceedings. He has represented clients in proceedings at the Patent Trial and Appeal Board, in federal district courts throughout the country, and at the Court of Appeals for the Federal Circuit. Learn more.

About the Firm

Thomas | Horstemeyer LLP is a premier intellectual property law firm headquartered in Atlanta with approximately 40 attorneys and patent agents serving clients all over the world. The firm offers services in all areas in intellectual property, including patents, trademarks, trade secrets, and copyrights. All of Thomas | Horstemeyer’s attorneys and patent agents have technical backgrounds, with many holding advanced masters and doctorate degrees in their respective technical fields. Learn more.